DETAILED ACTION
Pending Claims
Claims 2-16 are pending.
Priority
The instant application, filed June 27, 2024 is:
a continuation of U.S. Patent Application No. 17/697,745, filed March 17, 2022 (now U.S. Patent No. 12,049,574), which is
a continuation of U.S. Patent Application No. 17/198,504, filed March 11, 2021 (now U.S. Patent No. 11,629,276), which is
a divisional of U.S. Patent Application No. 14/961,513, filed December 7, 2015, (now U.S. Patent No. 10,947,428), which is a
continuation of U.S. Patent Application No. 13/918,021, filed June 14, 2013, now abandoned, which is
a continuation-in-part of U.S. Patent Application No. 13/315,518, filed December 9, 2011, now abandoned, which is
a continuation-in-part of U.S. Patent Application No. 12/949,878, filed November 19, 2010, now abandoned.
Applicant states that this application is a continuation or divisional application of the prior-filed application. A continuation or divisional application cannot include new matter. Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains matter not disclosed in the prior-filed application (see new matter rejection below). The application is currently being treated as a continuation-in-part with an effective filing date of June 27, 2024.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Response to Amendment
The objection to claim 1 has been rendered moot by the cancellation of this claim.
The rejection of claim 1 under 35 U.S.C. 103 as being unpatentable over Desai et al. (US 2012/0129980 A1) in view of Ohtani et al. (US 2012/0258314 A1) has been rendered moot by the cancellation of this claim.
The rejection of claim 1 on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,043,768 has been rendered moot by the cancellation of this claim.
The rejection of claim 1 on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 12,031,064 has been rendered moot by the cancellation of this claim.
The rejection of claim 1 on the ground of nonstatutory double patenting as being unpatentable over claims 2 and 3 of U.S. Patent No. 11,629,276 has been rendered moot by the cancellation of this claim.
Election/Restrictions
Newly submitted claims 8-11 & 12-16 are directed to inventions that are independent or distinct from the invention originally claimed for the following reasons:
Group I. Claims 2-7 (and cancelled claim 1), drawn to a one-component composition, classified in C08L63/00.
Group II. Claims 8-11, drawn to a method of treating a substrate, classified in B05D3/02.
Group III. Claims 12-16, drawn to an article, classified in B32B27/38.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case (2) the product as claimed can be used in a materially different process of using that product, such as impregnating a fibrous substrate or forming a molded article.
Inventions I and III are related as mutually exclusive species in an intermediate-final product relationship. Distinctness is proven for claims in this relationship if the intermediate product is useful to make other than the final product, and the species are patentably distinct (MPEP § 806.05(j)). In the instant case, the intermediate product is deemed to be useful as an impregnating material or a molding material and the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants. Furthermore, the composition of group I loses is chemical identity when forming the (cured) coating of the article in group III.
Inventions II and III are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case (1) the process as claimed can be used to make another and materially different product, such as a composite molded article (with a composition-based layer having a thickness exceeding a “coating”) or an encapsulated substrate.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
Each invention has attained recognition in the art as a separate subject for inventive effort, and also a separate field of search.
It is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other invention(s).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 8-11 (Group II) and 12-16 (Group III) are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 112, 1st paragraph (a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 2-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 2-7, independent claim 2 features: (d) a positive amount up to 3% by weight of 1,10-phenanthroline and/or a positive amount up to 1% by weight of a strontium phosphosilicate-based corrosion inhibitor.
Example 4 in Table 10 of the instant specification and examples 4 & 7-10 in Table 11 of the instant specification support embodiments formulated with 1,10-phenanthroline. The use of 1,10-phenanthroline is only presented in these exemplary embodiments, and the instant specification is silent regarding a range associated with this material. Example 4 in Table 10 and Example 4 in Table 11 feature approximately 1.3 wt% of 1,10-phenanthroline. Examples 7-10 in Table 11 feature approximately 0.52 wt% of 1,10-phenanthroline. These experimental amounts fail to provide adequate support for the full range of “a positive amount up to 3% by weight”.
Examples 7-10 in Table 11 of the instant specification support embodiments formulated with calcium strontium phosphosilicate. The use of this strontium phosphosilicate is only presented in these exemplary embodiments, and the instant specification is silent regarding a range associated with this material. Examples 7-10 in Table 11 feature approximately 0.52 wt% of calcium strontium phosphosilicate. This experimental amount fails to provide adequate support for the full range of “a positive amount of up to 1% by weight”. Furthermore, the calcium strontium phosphosilicate fails to provide adequate support for the broader scope of “strontium phosphosilicate-based” materials.
This is a new matter rejection. Claims 3-7 are rejected because they are dependent from claim 2.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 2-4, 6, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Desai et al. (US 2016/0083633 A1).
Regarding claims 2-4, 6, and 7, Desai et al. disclose: (2) a one-component composition (Example 4 in Table 10; Examples 4 & 7-10 in Table 11) comprising:
(a) 2% by weight to 40% by weight of an epoxy-capped flexibilizer comprising a reaction product of reactants comprising (i) an epoxy compound, (ii) an anhydride and/or a diacid and (iii) a polyol (Example 4 in Table 10; Examples 4 & 7-10 in Table 11: see “Epon 828/Tetrathane 650/HHPA 31”-);
(b) 3% by weight to 25% by weight of a heat-activated latent curing agent comprising a guanidine, a substituted guanidine, a substituted urea, a melamine resin, a guanamine derivative, a cyclic tertiary amine, an aromatic amine and/or mixtures thereof (Example 4 in Table 10; Examples 4 & 7-10 in Table 11: see “Dyhard 100SF 41” and “Diuron 46”);
(c) a positive amount up to 75% by weight of rubber particles having a core/shell structure (Example 4 in Table 10; Examples 4 & 7-10 in Table 11: see “Kane Axe MX-153 30”);
(d) a positive amount up to 3% by weight of 1,10-phenanthroline and/or a positive amount up to 1% by weight of a strontium phosphosilicate-based corrosion inhibitor (Example 4 in Table 10; Examples 4 & 7-10 in Table 11: see “1,10-Phenanthroline 34” and “Halox SW 111 35”); and
an epoxy compound or an epoxy resin not incorporated into or reacted as part of component (a) and/or an epoxy carrier resin incorporated into component (c) (Example 4 in Table 10; Examples 4 & 7-10 in Table 11: see “Kane Axe MX-153 30”);
wherein % by weight is based on total weight of the composition;
(3) wherein the epoxy compound reactant (i) of the epoxy-capped flexibilizer comprises Bisphenol A diglycidyl ether, phenyl diglycidyl ether, or combinations thereof (Example 4 in Table 10; Examples 4 & 7-10 in Table 11: see “Epon 828/Tetrathane 650/HHPA 31”-);
(4) further comprising an epoxy-imidazole adduct (Example 4 in Table 10; Examples 4 & 7-10 in Table 11: see “Ajicure PN-40 43”-);
(6) wherein the composition is formulated to cure at a temperature of 120°C to 140°C within 20 minutes or less (Example 4 in Table 10; Examples 4 & 7-10 in Table 11: see “130oC for 10 minutes”-); and
(7) wherein the composition is formulated to cure following exposure to thermal conditions or actinic radiation (Example 4 in Table 10; Examples 4 & 7-10 in Table 11: see “130oC for 10 minutes”-).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Desai et al. (US 2016/0083633 A1).
Regarding claim 5, the teachings of Desai et al. are as set forth above and incorporated herein. The exemplary embodiments fail to disclose: (5) the epoxy-imidazole adduct in an amount of 3% by weight to 25% by weight based on total weight of the composition. Rather Example 4 in Table 11 features approximately 2.6 wt%, which is just below the claimed range. In light of this, it has been found that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close – see MPEP 2144.05. Furthermore, the general teaching of Desai et al. disclose that the heat-activated latent curing agent, including those comprising the instantly claimed adduct (see paragraphs 0098 & 0110), can be provided in the instantly claimed amount (see paragraph 0097).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the exemplary embodiments of Desai et al. with the instantly claimed amount of epoxy-imidazole adduct (3% by weight to 25% by weight based on total weight of the composition) because: (a) Example 4 in Table 11 of Desai et al. features approximately 2.6 wt%, which is just below the claimed range; and (b) it has been found that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Furthermore: (c) the general teaching of Desai et al. disclose that the heat-activated latent curing agent, including those comprising the instantly claimed adduct, can be provided in the instantly claimed amount.
Claims 2, 3, 6, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Desai et al. (US 2012/0129980 A1) in view of Agarwal et al. (US 2008/0188609 A1) and Mowrer et al. (US 2010/0297357 A1).
Regarding claims 2, 3, and 7, Desai et al. disclose: (2) a one-component composition (Examples 1 & 2 in Table 5) comprising:
(a) 2% by weight to 40% by weight of an epoxy-capped flexibilizer comprising a reaction product of reactants comprising (i) an epoxy compound, (ii) an anhydride and/or a diacid and (iii) a polyol (Examples 1 & 2 in Table 5: see “Epon 828/Tetrathane 650/HHPA 21”);
(b) 3% by weight to 25% by weight of a heat-activated latent curing agent comprising a guanidine, a substituted guanidine, a substituted urea, a melamine resin, a guanamine derivative, a cyclic tertiary amine, an aromatic amine and/or mixtures thereof (Examples 1 & 2 in Table 5: see “Dicyandiamide 25” and “Diuron 26”);
(c) a positive amount up to 75% by weight of rubber particles having a core/shell structure (Examples 1 & 2 in Table 5: see “Kane Ace MX-153 20”); and
an epoxy compound or an epoxy resin not incorporated into or reacted as part of component (a) and/or an epoxy carrier resin incorporated into component (c) (Examples 1 & 2 in Table 5: see “Kane Ace MX-153 20 and “Epon 828 1”);
wherein % by weight is based on total weight of the composition;
(3) wherein the epoxy compound reactant (i) of the epoxy-capped flexibilizer comprises Bisphenol A diglycidyl ether, phenyl diglycidyl ether, or combinations thereof (Examples 1 & 2 in Table 5: see “Epon 828/Tetrathane 650/HHPA 21”); and
(7) wherein the composition is formulated to cure following exposure to thermal conditions or actinic radiation (paragraph 0012).
Desai et al. fail to disclose: (2, 3 & 7) (d) a positive amount up to 3% by weight of 1,10-phenanthroline and/or a positive amount up to 1% by weight of a strontium phosphosilicate-based corrosion inhibitor. Rather, the general teachings of Desai et al. contemplate the use of additives (see paragraphs 0116-0121). The general teachings of Desai et al. also disclose that their composition is suitable for use with various substrates, including metal substrates (see paragraph 0013). Agarwal et al. disclose a similar one-component rubber-modified epoxy-based based composition (see paragraph 0006; claims 1-23) used with metal substrates (see Abstract; paragraph 0077). Agarwal et al. also contemplate the use of additives (see paragraphs 0071-0076) and demonstrate that both coloring pigments and corrosion inhibitors are recognized in the art as suitable additives for this type of epoxy-based composition (see paragraph 0075). Mowrer et al. demonstrate that strontium zinc phosphosilicate is recognized in the art as a suitable corrosion inhibitor for epoxy-based formulations (see Abstract; paragraph 0099). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07. Mowrer et al. further disclose that the corrosion inhibitor can be provided in any suitable amount of up to 20 wt% (see paragraph 0099). In light of this, it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists – see MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the at before the effective filing date of the claimed invention to formulate the composition of Desai et al. with the instantly claimed strontium phosphosilicate-based corrosion inhibitor (and amount thereof) because: (a) Desai et al. contemplate the use of additives and disclose that their composition is suitable for use with various substrates, including metal substrates; (b) Agarwal et al. disclose a similar one-component rubber-modified epoxy-based based composition used with metal substrates; (c) Agarwal et al. also contemplate the use of additives and demonstrate that both coloring pigments and corrosion inhibitors are recognized in the art as suitable additives for this type of epoxy-based composition; (d) Mowrer et al. demonstrate that strontium zinc phosphosilicate is recognized in the art as a suitable corrosion inhibitor for epoxy-based formulations; (e) it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination; (f) Mowrer et al. further disclose that the corrosion inhibitor can be provided in any suitable amount of up to 20 wt%; and (g) it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.
Regarding claim 6, the combined teachings of {Desai et al., Agarwal et al. & Mowrer et al.} are as set forth above and incorporated herein. They fail to explicitly disclose: (6) wherein the composition is formulated to cure at a temperature of 120°C to 140°C within 20 minutes or less. However, the skilled artisan would have expected the composition resulting from the combined teachings of {Desai et al., Agarwal et al. & Mowrer et al.} to obviously embrace embodiments capable of curing under these conditions because the composition resulting from the combined teachings of {Desai et al., Agarwal et al. & Mowrer et al.} obviously satisfies all of the material/chemical limitations (and amounts thereof) of the claimed invention.
Therefore, the skilled artisan would have expected the composition resulting from the combined teachings of {Desai et al., Agarwal et al. & Mowrer et al.} to obviously embrace embodiments capable of curing under the instantly claimed conditions because the composition resulting from the combined teachings of {Desai et al., Agarwal et al. & Mowrer et al.} obviously satisfies all of the material/chemical limitations (and amounts thereof) of the claimed invention.
Claims 2, 3, 6, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Desai et al. (US 2012/0129980 A1) in view of Agarwal et al. (US 2008/0188609 A1) and Kaneko et al. (JP 2012-149109 A).
Regarding claims 2, 3, and 7, the primary teachings of Desai et al. are as set forth above and incorporated herein. Desai et al. fail to disclose: (2, 3 & 7) (d) a positive amount up to 3% by weight of 1,10-phenanthroline and/or a positive amount up to 1% by weight of a strontium phosphosilicate-based corrosion inhibitor. Rather, the general teachings of Desai et al. contemplate the use of additives (see paragraphs 0016-0121). The general teachings of Desai et al. also disclose that their composition is suitable for use with various substrates, including metal substrates (see paragraph 0013). Agarwal et al. disclose a similar one-component rubber-modified epoxy-based based composition (see paragraph 0006; claims 1-23) used with metal substrates (see Abstract; paragraph 0077). Agarwal et al. also contemplate the use of additives (see paragraphs 0071-0076) and demonstrate that both coloring pigments and corrosion inhibitors are recognized in the art as suitable additives for this type of epoxy-based composition (see paragraph 0075). Kaneko et al. demonstrate that 1,10-phenanthroline is recognized in the art as a suitable corrosion inhibitor/colorant for epoxy-based formulations (see paragraphs 0026, 0030, 0035 & 0038). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07. Kaneko et al. further disclose that the 1,10-phenanthroline can be provided in amounts as low as 3 wt% (see paragraph 0027). In light of this, it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists – see MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the at before the effective filing date of the claimed invention to formulate the composition of Desai et al. with the instantly claimed strontium phosphosilicate-based corrosion inhibitor (and amount thereof) because: (a) Desai et al. contemplate the use of additives and disclose that their composition is suitable for use with various substrates, including metal substrates; (b) Agarwal et al. disclose a similar one-component rubber-modified epoxy-based based composition used with metal substrates; (c) Agarwal et al. also contemplate the use of additives and demonstrate that both coloring pigments and corrosion inhibitors are recognized in the art as suitable additives for this type of epoxy-based composition; (d) Kaneko et al. demonstrate that 1,10-phenanthroline is recognized in the art as a suitable corrosion inhibitor/colorant for epoxy-based formulations; (e) it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination; (f) Kaneko et al. further disclose that the 1,10-phenanthroline can be provided in amounts as low as 3 wt%; and (g) it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.
Regarding claim 6, the combined teachings of {Desai et al., Agarwal et al. & Kaneko et al.} are as set forth above and incorporated herein. They fail to explicitly disclose: (6) wherein the composition is formulated to cure at a temperature of 120°C to 140°C within 20 minutes or less. However, the skilled artisan would have expected the composition resulting from the combined teachings of {Desai et al., Agarwal et al. & Kaneko et al.} to obviously embrace embodiments capable of curing under these conditions because the composition resulting from the combined teachings of {Desai et al., Agarwal et al. & Kaneko et al.} obviously satisfies all of the material/chemical limitations (and amounts thereof) of the claimed invention.
Therefore, the skilled artisan would have expected the composition resulting from the combined teachings of {Desai et al., Agarwal et al. & Kaneko et al.} to obviously embrace embodiments capable of curing under the instantly claimed conditions because the composition resulting from the combined teachings of {Desai et al., Agarwal et al. & Kaneko et al.} obviously satisfies all of the material/chemical limitations (and amounts thereof) of the claimed invention.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Desai et al. (US 2012/0129980 A1) in view of Agarwal et al. (US 2008/0188609 A1), Mowrer et al. (US 2010/0297357 A1), and Ohtani et al. (US 2012/0258314 A1).
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Desai et al. (US 2012/0129980 A1) in view of Agarwal et al. (US 2008/0188609 A1), Kaneko et al. (JP 2012-149109 A), and Ohtani et al. (US 2012/0258314 A1).
Regarding claims 4 and 5, the combined teachings of {Desai et al., Agarwal et al. & Mowrer et al.} and the combined teachings of {Desai et al., Agarwal et al. & Kaneko et al.} are as set forth above and incorporated herein. The primary teachings of Desai et al. use dicyandiamide (cyanoguanidine) in combination with a urea-based accelerator (see Examples 1 & 2 in Table 5; see also paragraph 0095). Accordingly, they fail to disclose dicyandiamide (cyanoguanidine) in combination with (4) an epoxy-imidazole adduct; (5) in an amount of 3% by weight to 25% by weight based on total weight of the composition.
Ohtani et al. also disclose a one-component epoxy resin composition cured with dicyandiamide (see Abstract; paragraphs 0058-0064). Similar to Desai et al., the dicyandiamide of Ohtani et al. is used in combination with an accelerator (see paragraphs 0065-0071). Ohtani et al. establish the both urea derivatives and epoxy resin amine adduct compounds are recognized in the art as suitable accelerators for the curing of one-component epoxy resin compositions with dicyandiamide (see paragraph 0069). Specifically, the epoxy amine adduct compounds of Ohtani et al. include an epoxy resin adduct compound of 2-ethyl-4-methylimidazole (PN-23) (see paragraph 0120). In light of this, it has been found that combining or substituting equivalents known for the purpose is prima facie obvious – see MPEP 2144.06. Ohtani et al. further disclose that the accelerator can be provided in amounts of between 2 wt% and 30 wt% (see paragraph 0071; see also Tables 1 & 2). In light of this, it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists – see MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the composition resulting from the combined teachings of {Desai et al., Agarwal et al. & Mowrer et al.} and the composition resulting from the combined teachings of {Desai et al., Agarwal et al. & Kaneko et al.} with the instantly claimed epoxy-imidazole adduct (and amount thereof) because: (a) the primary teachings of Desai et al. use dicyandiamide (cyanoguanidine) in combination with a urea-based accelerator; (b) Ohtani et al. also disclose a one-component epoxy resin composition cured with dicyandiamide in combination with an accelerator; (c) Ohtani et al. establish the both urea derivatives and epoxy resin amine adduct compounds are recognized in the art as suitable accelerators for the curing of one-component epoxy resin compositions with dicyandiamide; (d) specifically, the epoxy amine adduct compounds of Ohtani et al. include an epoxy resin adduct compound of 2-ethyl-4-methylimidazole (PN-23); and (e) it has been found that combining or substituting equivalents known for the purpose is prima facie obvious. Furthermore: (f) Ohtani et al. further disclose that the accelerator can be provided in amounts of between 2 wt% and 30 wt%; and (g) it has been found that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 2-4, 6, and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 12,043,768 in view of Desai et al. (US 2012/0129980 A1) and Kaneko et al. (JP 2012-149109 A).
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 12,043,768 in view of Desai et al. (US 2012/0129980 A1), Kaneko et al. (JP 2012-149109 A), and Ohtani et al. (US 2012/0258314 A1).
Regarding claims 2 and 7, patented claim 17 (dependent from patented claim 1) discloses a heat-curable composition satisfying instantly claimed components (a), (b), (c), and (d), along with the epoxy compound/resin. The teachings of Desai et al. and the teachings of Kaneko et al. are as set forth above and incorporated herein. The teachings of Desai et al. demonstrate that the instantly claimed amounts of (a) and (b) are recognized in the art as suitable amounts of (a) and (b) for this type of epoxy-based formulation. The teachings of Kaneko et al. demonstrate that the instantly claimed amount of (d) is recognized in the art as a suitable amount of (d) for this type of epoxy-based formulation.
Regarding claim 3, the composition resulting from the combined teachings obviously embraces the instantly claimed flexibilizer – see “(a)” in that patented composition.
Regarding claim 4, the composition resulting from the combined teachings obviously embraces the instantly claimed adduct – see “(x)” in that patented composition.
Regarding claim 6, the composition resulting from the combined teachings obviously embraces embodiments capable of curing at the instantly claimed conditions because it obviously all of the material/chemical limitations of the claimed invention.
Regarding claim 5, the teachings of Ohtani et al. are as set forth above and incorporated herein. The teachings of Ohtani et al. demonstrate that the instantly claimed amount of adduct is recognized in the art as a suitable amount of adduct for this type of epoxy-based formulation.
Claims 2-4, 6, and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of U.S. Patent No. 12,031,064 in view of Desai et al. (US 2012/0129980 A1) and Kaneko et al. (JP 2012-149109 A).
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of U.S. Patent No. 12,031,064 in view of Desai et al. (US 2012/0129980 A1), Kaneko et al. (JP 2012-149109 A), and Ohtani et al. (US 2012/0258314 A1).
Regarding claims 2 and 7, patented claim 18 (dependent from patented claim 1) discloses a heat-curable composition satisfying instantly claimed components (a), (b), (c), and (d), along with the epoxy compound/resin. The teachings of Desai et al. and the teachings of Kaneko et al. are as set forth above and incorporated herein. The teachings of Desai et al. demonstrate that the instantly claimed amounts of (a) and (b) are recognized in the art as suitable amounts of (a) and (b) for this type of epoxy-based formulation. The teachings of Kaneko et al. demonstrate that the instantly claimed amount of (d) is recognized in the art as a suitable amount of (d) for this type of epoxy-based formulation.
Regarding claim 3, the composition resulting from the combined teachings obviously embraces the instantly claimed flexibilizer – see “(a)” in that patented composition.
Regarding claim 4, the composition resulting from the combined teachings obviously embraces the instantly claimed adduct – see “(x)” in that patented composition.
Regarding claim 6, the composition resulting from the combined teachings obviously embraces embodiments capable of curing at the instantly claimed conditions because it obviously all of the material/chemical limitations of the claimed invention.
Regarding claim 5, the teachings of Ohtani et al. are as set forth above and incorporated herein. The teachings of Ohtani et al. demonstrate that the instantly claimed amount of adduct is recognized in the art as a suitable amount of adduct for this type of epoxy-based formulation.
Claims 2-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-3 of U.S. Patent No. 11,629,276 in view of Agarwal et al. (US 2008/0188609 A1) and Kaneko et al. (JP 2012-149109 A).
Claims 2-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-3 of U.S. Patent No. 11,629,276 in view of Agarwal et al. (US 2008/0188609 A1) and Mowrer et al. (US 2010/0297357 A1).
Regarding claims 2-5 and 7, with the exception of instantly claimed component (d), the patented claims:
satisfy component (a) of claims (2 & 7) and the amount thereof (see “(a)” in claims 2-3),
satisfy component (b) of claim (2 & 7) and the amount thereof (see “(b)” in claims 2-3),
satisfy component (c) of claim (2 & 7) and the amount thereof (see “(e)” in claims 2-3),
satisfy the epoxy compound/resin of claim (2 & 7) (see claims 2-3);
satisfy the flexibilizer of claim (3) (see claim 3);
satisfy the adduct of claim (4) (see “(b)” in claims 2-3); and
obviously embrace the adduct amount of claim (5) (see “(b)” in claims 2-3).
The teachings of Agarwal et al., Kaneko et al., and Mowrer et al. are as set forth above and incorporated herein. The combined teachings of {Agarwal et al. & Kaneko et al.} demonstrate 1,10-phenantholine (and the relative amount thereof) is recognized in the art as a suitable additive for this type of epoxy-based formulation. The combined teachings of {Agarwal et al. & Mowrer et al.} demonstrate that strontium phosphosilicates (and the relative amount thereof) are recognized in the art as suitable additives for this type of epoxy-based formulation. In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Regarding claim 6, the composition resulting from the combined teachings obviously embraces embodiments capable of curing at the instantly claimed conditions because it obviously all of the material/chemical limitations of the claimed invention.
Response to Arguments
Applicant’s arguments with respect to the pending claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Communication
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/MICHAEL J FEELY/Primary Examiner, Art Unit 1766
February 3, 2026